In general, all writers encounter the same or similar problems in submitting their work to production companies.
Although under the Berne Convention (to which many countries including the U.S. are a member), if a non-U.S. writer wants to seek some form of judicial relief, the U.S. must accord the non-U.S. writer the same degree of protection as that non-U.S. writer has in his or her own country of origin.
However, the non-U.S. writer can avail himself or herself of certain additional benefits under U.S. copyright law.
Under U.S. copyright law, copyright protection automatically exists from the moment of creation for any work that is “fixed” such as in a writing or recording. However, even though copyright protection automatically exists, and copyright registration is no longer legally required, there are significant benefits for the copyright owner to register their his or her creative work with the U.S. Copyright Office in a timely manner, whether the copyright owner is U.S.-based or not.
First, in the United States copyright registration is a prerequisite for bringing a copyright infringement lawsuit. A copyright owner cannot proceed with a copyright infringement lawsuit for damages unless the work has been registered.
If he or she acts proverbially pound wise and penny foolish, a copyright owner may not want to spend the money (and time) in registering the work before an infringement actually occurs since a copyright owner can register the work after it has been infringed. However, such thinking could prove to be very costly and damaging to the copyright owner. If a copyright owner wants to pursue an infringement action for monetary damages, the copyright owner would have to pay a significantly higher registration fee to expedite the registration of the work so that the lawsuit could be filed for monetary damages and demonstrate to the U.S. Copyright Office the immediate need for expedited filing (such as unauthorized distribution of the work).
Still, a copyright owner’s late registration with the U.S. Copyright Office would restrict a copyright owner from recovering “statutory damages” as well as legal costs and attorney’s fees. What is a timely manner for a copyright owner to file for copyright registration? It is when a copyright owner files for copyright registration prior to an infringement taking place or within three months from the publication date of the work. If the infringement occurs either prior to the effective date of copyright registration or after the three-month grace period, then the copyright owner will not be entitled to receive those statutory damages, legal costs and attorneys' fees. The effective date of copyright registration is the date when the U.S. Copyright Office receives the complete registration application that consists of the application, fee and deposit copies.
The significance of statutory damages is that it permits an award of special damages in a successful infringement lawsuit and the copyright owner does not have the burden to prove actual damages. The reasons why a copyright owner may elect to receive statutory damages rather than actual damages is that in many instances proving actual damages is very difficult or the profits of the infringer are very small. The amount of statutory damages that may be awarded is discretionary with the court and will depend upon the extent of the willful and harmful nature of the infringement with more deliberate and more damaging infringements resulting in a greater award and less recoveries for so-called accidental or innocent infringement.
Furthermore, the legal costs in any copyright infringement lawsuit, particularly attorneys' fees, are often extremely expensive since there is no small claims court for copyright infringement. When a copyright owner registers the work in a timely manner, the court also has the discretion to award attorneys' fees and legal costs to the copyright owner. This is a key distinction for U.S. and non-U.S. copyright owners since in such countries as England, the losing party pays for its own legal fees and expenses as well as those of the prevailing party. In the U.S., each party tends to pay its own expenses. U.S. copyright law permits an exception to this U.S. legal trend.
The third and one of most important reasons why the copyright owner should register a copyrighted work is that the certificate of registration serves as prima facie evidence or presumption that the work is original and is owned by the registrant of the copyrighted work. This becomes especially important if it becomes necessary for the copyright owner to obtain a preliminary injunction against a copyright infringer, such as the immediate termination of the distribution of the infringer's work. However, a copyright registrant should bear in mind that this presumption is not absolute; it can be rebutted or refuted by another party. This presumption of validity will only apply if the work has been registered within five years from the publication date.
Therefore, by registering a copyrighted work in a timely manner, the copyright owner has the ability to bring a lawsuit or just the possibility of a lawsuit when it is needed most by a copyright owner. Prior to a copyright owner bringing an infringement lawsuit, the copyright owner not only can send a "cease and desist letter" to the infringer but also be armed with the knowledge that a lawsuit could be immediately filed and that: (i) the validity of originality and ownership of the work will be presumed, (ii) statutory damages may be awarded, and (iii) legal costs and attorneys' fees may be recovered.
When a copyright owner has such legal ammunition, an infringer will frequently be more amenable to the copyright owner's demands without the copyright owner needing to file a lawsuit.
Please also read my other post regarding script submission.
About Robert L. Seigel
Robert L. Seigel ([email protected]) is a NYC entertainment attorney and a partner in the Cowan DeBaets Abrahams & Sheppard LLP law firm which specializes in the representation of clients in the entertainment and media areas.